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2363.03 The Losing Party - 2300 Interference Proceedings
2363.03 The Losing Party
37 CFR 1.663 Status of claim of defeated applicant after interference.
Whenever an adverse judgment is entered as to a count against an applicant from which no appeal ( 35 U.S.C. 141) or other review ( 35 U.S.C. 146) has been or can be taken or had, the claims of the application corresponding to the count stand finally disposed of without further action by the examiner. Such claims are not open to further ex parte prosecution.
The Board's judgment in an interference conducted under 37 CFR subpart E will state that the losing party is not entitled to a patent containing the claims corresponding to the count or counts. Under 37 CFR 1.663, such claims "stand finally disposed of without further action by the examiner." See also 35 U.S.C. 135(a). When the files are returned to the TC after termination of the interference, a pencil line should be drawn through the claims as to which a judgment of priority adverse to an applicant has been rendered, and the notation " 37 CFR 1.663" should be written in the margin to indicate the reason for the pencil line. If these claims have not been canceled by the applicant and the application is otherwise ready for issue, these notations should be replaced by a line in red ink and the notation " 37 CFR 1.663" in red ink before passing the application to issue, and the applicant notified of the cancellation by an Examiner's Amendment. If an action is necessary in the application after the interference, the applicant should also be informed that "Claims (designated by numerals), as to which a judgment adverse to the applicant has been rendered, stand finally disposed of in accordance with 37 CFR 1.663."
If all the claims in the application are eliminated, a letter should be written informing the applicant that all the claims in the application have been disposed of, indicating the circumstances, that no claims remain subject to prosecution, and that the application will be sent to the abandoned files with the next group of abandoned applications. Proceedings are terminated as of the date the interference terminated. See MPEP § 2361.
If the losing party's application was under rejection at the time the interference was declared, such rejection is ordinarily repeated (either in full or by reference to the previous action) and, in addition, any other suitable rejections, as discussed below, are made. If the losing party's application was under final rejection or ready for issue, his or her right to reopen the prosecution is restricted to subject matter related to the issue of the interference.
Where the losing party failed to get a copy of the opponent's drawing or specification during the interference, the losing party may order a copy thereof to enable said party to respond to a rejection based on the successful party's disclosure. Such order is referred to the administrative patent judge who has authority to approve orders of this nature.
In addition to repeating any outstanding rejection, the examiner should consider whether any remaining claims in the losing party's application should be rejected on the ground of unpatentability under 35 U.S.C. 102/ 103, or on the ground of estoppel.
UNPATENTABILITY UNDER
The examiner should determine from the Board's decision the basis on which judgment was rendered against the applicant. If the judgment was that applicant was not the first inventor of the subject matter in issue, the application claims may be rejected under 35 U.S.C. 102(g)/ 103 as unpatentable over the lost counts. If the judgment was based on a holding that applicant derived the invention from another, a rejection of claims as unpatentable over the lost counts under 35 U.S.C. 102(f)/ 103 may be in order. Where the Board rendered judgment against the applicant because his or her claims were unpatentable over prior art, under 35 U.S.C. 112, or on other grounds, the other claims in the application should be reviewed to determine whether any of those grounds may be applicable to them.
ESTOPPEL
Claims which cannot be rejected as unpatentable over the lost counts may still be subject to rejection on the ground of estoppel. As stated in 37 CFR 1.658(c), a losing party who could have properly moved under 37 CFR 1.633 or 1.634, but failed to do so, is estopped from taking subsequent action in the USPTO which is inconsistent with the party's failure to properly move. However, in the event of a "split award," the losing party is not estopped as to claims which corresponded, or properly could have corresponded, to a count which he or she won.
The following examples illustrate the application of estoppel to the losing party:
Example 1
Junior party applicant AL and senior party applicant AK both disclose separate patentable inventions "A" and "B" and claim only invention A in their respective applications. An interference is declared with a single count to invention A. Neither party files a motion under 37 CFR 1.633(c)(1) to add a count to invention B. Judgment as to all of AL's claims corresponding to the sole count is awarded to junior party applicant AL. Senior party applicant AK will be estopped to thereafter obtain a patent containing claims to invention B, because applicant AK failed to move to add a count to invention B in the interference. Junior party applicant AL will not be estopped to obtain a patent containing claims to invention B.
Example 2
In this example, the facts are the same as in example 1 except that judgment is awarded as to all AK's claims corresponding to the count to senior party applicant AK. Junior party applicant AL will be estopped to obtain a patent containing claims to invention B in the interference. Senior party applicant AK will not be estopped to obtain a patent containing claims to invention B.
Example 3
Junior party applicant AM and senior party applicant AP both disclose separate patentable inventions "C", "D", and "E" and claim inventions C and D in their respective applications. An interference is declared with two counts. Count 1 is to invention C and Count 2 is to invention D. Neither party files a preliminary motion to add a proposed Count 3 to invention E. Judgment as to all AM's claims corresponding to Counts 1 and 2 is awarded to junior party AM. Senior party applicant AP will be estopped to thereafter obtain a patent containing claims to invention E, because applicant AP failed to move to add a count to invention E to the interference. Junior party applicant AM will not be estopped to obtain a patent containing a claim to invention E.
Example 4.
In this example, the facts are the same as in Example 3 except that judgment is awarded as to all AP's claims corresponding to Counts 1 and 2 to senior party applicant AP. Junior party applicant AM will be estopped to obtain a patent containing claims to invention E, because applicant AM failed to move to add a count to invention E in the interference. Senior party applicant AP will not be estopped to obtain a patent containing claims to invention E.
Example 5.
In this example, the facts are the same as in Example 3 except that judgment is awarded on all of AM's claims corresponding to Count 1 to junior party applicant AM and judgment is awarded to all AP's claims corresponding to Count 2 to senior party applicant AP. Both parties will be estopped to obtain a patent containing claims to invention E, because neither moved to add a count to invention E during the interference. Assume that junior party AM could have properly moved under 37 CFR 1.633(f) to be accorded the benefit of an earlier application, but did not do so during the interference. Junior party AM will not be estopped in subsequent ex parte prosecution from asking for benefit of the earlier application as to the invention defined by Count 1. Accordingly, if the examiner were to reject junior party AM's claim corresponding to Count 1 on the basis of some newly discovered art, junior party AM could properly antedate the prior art by seeking the benefit under 35 U.S.C. 120 of the earlier application. Thus even though junior party AM was a "losing party" as to Count 2 (an adverse judgment as to junior party AM's claims corresponding to Count 2 having been entered), junior party AM was awarded a favorable judgment ( 37 CFR 1.658(c)) as to Count 1. Junior party AM will be estopped in subsequent ex parte prosecution from attempting to be accorded the benefit of the earlier application as to the invention of Count 2.
Example 6.
Applicant AQ discloses and claims invention "F." Applicant AR discloses and claims separate patentable inventions "F" and "G." The assignee of applicant AQ also owns an application of applicant AS which discloses and claims invention "G." An interference is declared between applicant AQ and applicant AR. The sole count is directed to invention F. No motion is filed by applicant AQ or its assignee to declare an additional interference between applicant AR and applicant AS with a count to invention G. A judgment as to all AR's claims corresponding to the sole count is awarded to applicant AR. Applicant AS and the assignee will be estopped to obtain a patent containing claims to invention G, because applicant AQ and the assignee failed to move to declare an additional interference with a count to invention G.
Example 7
The facts in this example are the same as the facts in Example 6 except that judgment as to all of AQ's claims corresponding to the sole count is awarded to applicant AQ. Applicant AS and the assignee would not be estopped, because applicant AQ was not a "losing party" ( 37 CFR 1.658(c)).
Example 8
Applicant AT discloses a generic invention to "solvent" and a species to "benzene." Application AT contains a patentable claim 1 (solvent) and no other claims. Applicant AU discloses the generic invention to "solvent" and species to "benzene" and "toluene." Application AU contains patentable claim 3 (solvent) and no other claims. An interference is declared with a single count (solvent). Claim 1 of application AT and claim 3 of application AU are designated to correspond to the count. No preliminary motions are filed. A judgment is entered in favor of applicant AT on the claim corresponding to the sole count. Applicant AU would be estopped to obtain a patent containing a claim to benzene, because applicant AU failed to file a preliminary motion under 37 CFR 1.633(c)(1) seeking to add a count to benzene and benzene was disclosed in winning party AT's application. Applicant AU would also be estopped to obtain a patent containing a claim to toluene, unless "toluene" defines a "separate patentable invention" from "solvent." A basis for interference estoppel ( 37 CFR 1.658(c)) exists if "toluene" and "solvent" define the "same patentable invention" because a claim to "toluene" could properly have been added and designated to correspond to the count. See 37 CFR 1.633(c)(2).
The following two examples illustrate the application of estoppel against an applicant who lost the interference based solely on the fact that the applicant was unable to establish a date of invention prior to the opponent's foreign filing date (see Ex parte Tytgat, 225 USPQ 907 (Bd. App. 1985)):
Example 9.
Application AV discloses engines in general and in particular a 6-cylinder engine. Application AV contains only claim 1 (engine). Application AW discloses engines in general, but does not specifically disclose a 6-cylinder engine. Application AW contains only a single claim 3 (engine). The U.S. "filing date" ( 37 CFR 1.601(h) of the AV application is prior to the U.S. filing date of the AW application, but the AW application claims a foreign priority date under 35 U.S.C. 119 based on an application filed in a foreign country prior to the filing date of the AV application. An interference is declared. The sole count of the interference is to "an engine." Claim 1 of the AV application and claim 3 of the AW application are designated to correspond to the count. During the interference, applicant AV does not move under 37 CFR 1.633(c)(2) to add a claim to a 6-cylinder engine and to designate the claim to correspond to the count. Applicant AW is awarded a judgment in the interference based on the earlier filing date of the foreign application. After the interference, applicant AV adds claim 2 (6-cylinder engine) to the AV application. Whether AV would be entitled to a patent containing a claim to a 6-cylinder engine will depend solely on whether a 6-cylinder engine is a "separate patentable invention" from "engine" - the subject matter of the count. If a 6-cylinder engine is a "separate patentable invention" within the meaning of 37 CFR 1.601(n), applicant AV could not have successfully moved under 37 CFR 1.633(c)(2) to add claim 2 and to designate it to correspond to the count. Therefore applicant AV could obtain a patent containing claim 2. If, on the other hand, a 6-cylinder engine is not a "separate patentable invention," claim 2 of the AV application would be rejected on the basis of interference estoppel because claim 2 could have been added by a motion under 37 CFR 1.633(c)(2). See 37 CFR 1.658(c).
Example 10.
This example is basically the same as Example 9, except that application AV initially contains claim 1 (engine) and claim 2 (6-cylinder engine). When the interference is declared, both claims 1 and 2 of application AV are designated to correspond to the count. During the interference, applicant AV does not move under 37 CFR 1.633(c)(4) to designate claim 2 as not corresponding to the count. A judgment in the interference is entered for applicant AW based on the earlier filing date of the foreign patent application. After the interference, applicant AV would not be able to obtain a patent containing claim 2, because the claim was designated to correspond to a count and entry of the judgment constitutes a final decision by the PTO refusing to grant applicant AV a patent containing claim 2.
ALLOWANCE OF LOSING PARTY'S APPLI- CATION
Before allowing a losing party's application, the examiner should carefully consider whether the grounds of estoppel have been fully applied. In order to promote uniform application of the doctrines of lost counts and estoppel, the examiner must consult the administrative patent judge who was in charge of the interference before allowing the losing party's application.
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